Solvay (Societe Anonyme) v Leslie Gene Hanslo

[2002] ATMO 84

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Solvay (Societe anonyme) to registration of trade mark application 856972(1, 17) - POLVIN - filed in the name of Leslie Gene Hanslo.

Date of Decision:                  26 September 2002
Delegate:  Hearing Officer Mary Skivington

Representation:  Opponent: Russell John Waters of Phillips Ormonde and Fitzpatrick, attorneys.

Decision:  Section 52 Opposition: registration allowed s55(b)

Background

Leslie Gene Hanslo filed trade mark application number 856972 on 15 November 2000 for the trade mark POLVIN.  The trade mark was duly examined and following an amendment to the specification of goods, its acceptance for registration was advertised in the Official Journal of Trade Marks on 24 May 2001.  The goods in classes one and seventeen respectively are described as:

Unprocessed plastics, resins, polypropylenes, polyethylenes, polyvinylchloride, thermoplastic rubbers; and,

Plastics in extruded form, silane cross linkable rubber compounds, halogen free electric cable compounds, semi-processed plastic compounds and plastics, and plastic
mouldings.

On 1 August 2001 Phillips Ormonde and Fitzpatrick, Trade Mark Attorneys, filed a notice of opposition to registration of the trade mark on behalf of Solvay (Societe anonyme), (Solvay ), the owners of trade mark registration number 806496 in classes one and seventeen for the trade mark SOLVIN.  The notice lists twelve grounds of opposition.  The goods of the registered trade mark, which has a priority date of
9 March 1999, are:

Chemicals products used in industry; unprocessed artificial resins, unprocessed plastics; in class 1 and,
Plastics in extruded form for use in manufacture, in class 17.

All the evidence in support, answer and reply had been served and filed by 2 July 2002.  Neither party has requested a hearing.  I have been asked, as a delegate of the Registrar, to decide the opposition on the basis of the evidence served and filed along with the written submissions filed on behalf of the opponent, Solvay, by Russell John Waters, a partner of the firm Phillips Ormonde and Fitzpatrick.

Evidence and submissions

The evidence in support consists of a statutory declaration with exhibits numbered 1 to 5, made by Roland Eischen who is the Intellectual Assets Manager of Solvay S.A.

Leslie Gene Hanslo who is the owner of the trade mark and a director of Polvin Compounds Pty Ltd filed the evidence in answer, which consists of a statutory declaration with exhibits numbered 1 to 9.

The evidence in reply comprises two statutory declarations.  The first of these declarations was made by Russell John Waters of Phillips Ormonde and Fitzpatrick.
Exhibit RJW1 is attached to this declaration.  The second declaration, with exhibits RIC-1 to RIC-4 was made by Rodney Ian Lindsay Cruise, also a partner of the firm Phillips Ormonde and Fitzpatrick.

The Eischen declaration states that the opponent's trade mark has a priority date of
9 March 1999 and first use of the trade mark SOLVIN in Australia occurred in August of the same year.  Use of the trade mark SOLVIN has been in respect of a range of polyvinylchloride resins having differing properties, for use in a variety of applications.  Sales have increased substantially in the relatively short period of use although to date they appear to have been limited to quite a small geographic area.  The products are advertised in international trade magazines, and via the Internet. Advertising brochures and technical data sheets are provided directly to customers

The Hanslo declaration in evidence in answer declares that use of the trade mark POLVIN began in the year 2000. In the short period of use the volume of sales throughout Australia has been impressive.  The trade mark is advertised in trade magazines and promoted by means of a various promotional items such as calendars, pens, mugs and golf balls.  The goods are polyvinylchloride compounds for use in numerous applications.  The Hanslo declaration includes twelve trade declarations all confirming the declarants knowledge of the trade mark POLVIN and that the declarants would experience no difficulty in distinguishing between POLVIN and SOLVIN.  Eight of the declarants confirmed that they had heard of the opponent Solvay and the SOLVIN range of resins and the remaining four had no knowledge of the opponent or the trade mark SOLVIN.  According to the Hanslo declaration there is no evidence that the opponent's trade mark is advertised in Australia.

The Waters declaration in reply to the evidence in answer provided evidence that the trade mark SOLVIN has been advertised and referred to in articles in international trade magazines available in Australia.  The Cruise declaration provided evidence that these international trade magazines are available in a number of major Australian libraries. European Chemical News, for example, is held in 11 libraries, Modern Plastics International is held in 33 libraries and Chemical Week is held in at least 18 libraries.

Mr Waters filed written submissions on behalf of Solvay in which the only grounds of opposition pursued were those that relate to sections 44 and 60 of the Act.  He also commented on the manner of use of POLVIN saying that if does not amount to trade mark use in relation to the claimed goods.

Discussion

Subsection 7 (1) of the Act provides:

Use of trade mark

If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note: For prescribed court see section 190.

The applicant's use of the mark shows that the word POLVIN is often accompanied with the descriptive word compound.  As the goods are compounds this word is merely a statement about the nature of the goods and does not have trade mark significance.  On other occasions the words Pty Ltd in quite small typescript are used as well. The word POLVIN is usually in a larger typescript and a different colour from any other material appearing with it.  In the material provided the colour is always red.  The additions do not substantially affect the identity of the trade mark, which would be seen by consumers as POLVIN.  I am satisfied that the way the applicant uses the mark falls within the provisions of the Act.

To the extent that it concerns this opposition Section 44 of the Act provides:

Identical etc. trade marks

(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.

Mr Waters has submitted that POLVIN is substantially identical with or deceptively similar to Solvay's trade mark which has an earlier priority date and is for similar goods or identical goods.  He concedes that the applicant has achieved significant sales in the short time that POLVIN has been used as a trade mark, but then refers to the comments of Senior Assistant Registrar Susan Farquhar in the 'Bi-Lo' case, Foodland Associated Limited v John Weeks Pty Ltd., (1988) AIPC 90-466,

'I find it difficult to concede that any amount of use, no matter how great in monetary terms, in such a short period would be sufficient to meet the overall requirement that the use be substantial and of real commercial value.'

The period of time referred to in the 'Bi-Lo' case was only seven months and in this case the concurrent use which began in the year 2000 has only been a little longer. (The actual date of first use has not been provided).  I consider the period of use in this case too, is insufficient in terms of time and volume of sales to be enough to evaluate the concurrent use if I find that the trade marks are substantially identical or deceptively similar.

The Hanslo declaration states that the applicant's goods do not compete directly with those of the opponent, at present, however, I must make an assessment based on an assumption that both parties will in fact use their trade marks on all the goods listed in their respective claims.  The goods specified in the subject application are either identical with, or fall within the description 'similar goods' to those specified in the opponent's registration.

Given the very close similarity in the goods I must now consider if the trade marks POLVIN and SOLVIN are substantially identical.  In deciding whether marks are substantially identical Windeyer J in Shell Co. (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407 considered that the trade marks should be compared side by side. On this test it is obvious the marks differ. While five of the six letters in the words are the same, the initial letters are not and so they can be easily distinguished on this test. Phonetically and visually there is little likelihood of deception and confusion between the letters P and S. I do not think these marks are substantially identical.

I must next consider whether the marks are deceptively similar.

Parker J listed certain rules of comparison in Pianotist Co.'s Appn, (1906) 23RPC 774 at P777 where he said,

"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."

It was found in London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 that the beginning of words is accentuated in comparison with the end of the word so that 'the first syllable of a word is, as a rule, far the most important for the purpose of distinction'. It is not necessary to pronounce a word to impress it on the memory. The form of the word will be noted and the beginning of the word will be what is impressed on the mind. Visually and phonetically the first syllables, POL and SOL are distinguishable.

Both POLVIN and SOLVIN are invented words, derived I think, from words common to the trade in the relevant goods, poly, vinyl and solvent or soluble.  Although they are invented words they have a descriptive flavour because of their manner of construction. The trade marks database contains numerous examples of trade marks in classes one and seventeen which have been constructed from combinations of one or more of the syllables that comprise these trade marks.  I think it is unlikely that customers for these goods will ignore differences between trade marks even though, they are constructed from elements of words common to the trade.

In Mond Staffordshire Refinery Company Limited v Ellis Harlem and Another [1929] 41 CLR 475, it was found that "Monsol" and "Mulsol" were not deceptively similar. The High Court in comparing the marks gave greater weight to "Mon" and "Mul" because of the number of pharmaceutical trade marks ending with "sol" and decided that confusion was not likely.

In the normal market for these goods, purchasers will be knowledgeable persons in the trade who will exercise proper care in the selection and purchase of goods.  The goods do not belong to the categories of goods that may be purchased with little thought, on the basis of a whim or in a hurry.  Given the circumstances surrounding trade in these goods I am not satisfied that there is a real likelihood that their co-existence on the Register will lead to deception or confusion as to the origin of the goods.

As I have found that these trade marks are neither substantially identical with each other nor deceptively similar to each other I dismiss this ground of opposition. 

Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in
Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.

This ground of opposition fails to meet the requirements of subsection 60(a) because the trade marks are neither substantially identical nor deceptively similar.  Moreover I do not think the opponent has, as yet, acquired a reputation in Australia sufficient to say that use of a substantially identical or deceptively similar trade mark by another person would be likely to deceive or cause confusion.  The trade mark does not appear to have been very actively promoted and the volume of sales and the extent and duration of use are all quite limited.

Decision

The opposition has not succeeded on any of the grounds pursued and as a consequence is dismissed.  Trade mark number 856972 may proceed to registration subject to payment of the registration fee, unless within one month of the date of this decision, the Registrar is served with a copy of a notice of appeal.

Mary Skivington

Hearing Officer
26 September 2002